In Norberto-Colon et. al. v. South American Restaurants Corp. the United States Court of Appeals for the First Circuit held that a chicken sandwich is not entitled to copyright protection. The orginal plaintiffs in the action worked for South American Restaurants Corp. (SARCO) a franchisee and operator of Church’s Chicken in Puerto Rico. Plaintiff Norberto-Colon and his wife came up with the idea of adding a chicken sandwich to the menu which led Church’s Chicken to begin selling the sandwich. The chicken sandwich consisted of a fried chicken breast patty, lettuce, tomato, American cheese and garlic mayonnaise on a bun. The Plaintiffs also came up with the name the “Pechu Sandwich”.
SARCO registered the PECHUSANDWICH mark with the United States Patent and Trademark Office (USPTO).
The plaintiffs claimed that SARCO had stolen their intellectual property and filed suit claiming an entitlement to a percentage of SARCO’s profits from the sandwich. The claims alleged trademark infringement under the Lanham Act, fraud on the USPTO in the registration process, and also a claim for Copyright Infringement under the Copyright Act.
According to the Court, to determine copyright infringement “the complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Igbal, 556 U.S. 662, 678 (2009).
The plaintiff claimed that SARCO violated its intellectual property rights for the recipe for the sandwich and for the actual name of the sandwich, asserting that the name of the sandwich is a creative work under the Copyright Act and that plaintiff was the creator of this work.
Under 17 U.S.C. Section 102(a) copyright protection is available for:
- literary works;
- musical works, including any accompanying words;
- dramatic works, including any accompanying music;
- pantomimes and choreographic works;
- pictorial, graphic, sculptural works;
- motion pictures and other audiovisual works;
- sound recordings; and
- architectural works.
The Court found that it was clear that the recipe for a chicken sandwich did not fit any of these categories. The Court cited Publ’ns Int’l Ltd. v. Merdith Corp., 88 F.3d 473, 480-81 (7th Cir. 1996) for the proposition that recipes are functional directions to achieve a result and are not copyrightable.
Further, the Court held that “words and short phrases, such as names, titles, and slogans are not copyrightable.
With respect to the claim that SARCO committed fraud on the USPTO by registered hte anem PECHUSANDWICH under its own name, the Court found that a claim under Section 38 of the Lanham Act needed to plead:
- that the registrant made a false representation of material fact to the USPTO;
- that the registrant knew or should have known that the representation was false;
- that the registrant intended to induce the USPTO to act or refrain from acting on the basis of the representation;
- that the USPTO reasonable relied on the misrepresentation;
- and that damage was proximately caused by the USPTO’s reliance on the false material fact.
The Court held that Plaintiff failed to provide any facts to support its conclusions that SARCO committed fraud on the USPTO. The Court also noted that even though not directly argued, the work more than likely would have been a Work for Hire owned by SARCO, regardless if it was created by Plaintiffs.
Finally, the lower Court also dismissed the trademark infringement claims,and the First Circuit Court of Appeal decided not to consider these claims. Likely also, the claims of trademark ownership and infringement failed under the Work for Hire doctrine.
Thus, no infringement on the chicken sandwich.